Ex Parte GoldmanDownload PDFPatent Trial and Appeal BoardAug 25, 201311968082 (P.T.A.B. Aug. 25, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STANLEY J. GOLDMAN ____________________ Appeal 2011-009951 Application 11/968,082 Technology Center 2800 ____________________ Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and ANDREW J. DILLON, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-009951 Application 11/968,082 2 STATEMENT OF THE CASE Introduction Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claim Exemplary independent claim 1 under appeal, with emphasis added, reads as follows: 1. A phase-locked loop (PLL), comprising: a phase detector configured to generate an error signal based on a reference frequency and an output frequency of said PLL; a voltage tuner configured to receive said error signal and generate a tuning voltage; and a voltage controlled oscillator configured to provide said output frequency, including: a voltage tune line configured to receive said tuning voltage, and ring-coupled delay elements, each including: a feedback path having a gain-attenuating transistor with a gate thereof being coupled to said voltage tune line. Examiner’s Rejections (1) The Examiner rejected claims 1, 2, 4, 8, 9, 12, 13, 15, 16, and 18 as being anticipated under 35 U.S.C. § 102(b) by Penza (US 5,666,088). Ans. 3-4. (2) The Examiner rejected claims 5-7, 14, and 19-21 as being unpatentable under 35 U.S.C. § 103(a) over Penza. Ans. 5-6. Appeal 2011-009951 Application 11/968,082 3 (3) The Examiner rejected claims 3, 10, 11, and 17 as being unpatentable under 35 U.S.C. § 103(a) over Penza and Yoshizawa (US 6,323,738 B1). Ans. 6-7. Appellant’s Contentions (1) Appellant contends (App. Br. 7-13; Reply Br. 2-6), inter alia, that the Examiner erred in rejecting claims 1, 2, 4, 8, 9, 12, 13, 15, 16, and 18 as being anticipated by Penza because (a) the portions of Penza (Fig. 3) cited by the Examiner fail to disclose the specific arrangement set forth in independent claims 1, 8, and 15, namely ring coupled elements which each include a feedback path, gain attenuating transistor, and gate (App. Br. 8-12; Reply Br. 5-6); and (b) Appellant’s Specification and the knowledge of one of ordinary skill in the art support the interpretation that a feedback path provides a path from an output node to an input node, where no node is traversed more than once (Reply Br. 2-5). (2) Appellant contends (App. Br. 13-21) that the Examiner erred in rejecting claims 5-7, 14, and 19-21 as being unpatentable over Penza for the same reasons as provided with respect to the anticipation rejection. (3) Appellant contends (App. Br. 22-26) that the Examiner erred in rejecting claims 3, 10, 11, and 17 under 35 U.S.C. § 103(a) over the combination of Penza and Yoshizawa for the same reasons as provided with respect to the anticipation rejection. Principal Issue on Appeal Did the Examiner err in rejecting claims 1-21 as being anticipated or obvious because Penza fails to disclose the specific arrangement for the ring- Appeal 2011-009951 Application 11/968,082 4 coupled elements, each including a feedback path, gain attenuating transistor, and gate, as recited in each of independent claims 1, 8, and 15?1 ANALYSIS The way in which the elements are arranged or combined in the claim must itself be disclosed, either expressly or inherently, in an anticipatory reference. “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (emphasis added) (citation omitted). The requirement that the prior art elements themselves be “arranged as in the claim” means that claims cannot be “treated . . . as mere catalogs of separate parts, in disregard of the part-to- part relationships set forth in the claims and that give the claims their meaning.” Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1459 (Fed. Cir. 1984). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added) (hyperlink omitted). 11 We recognize that Appellant’s arguments (App. Br. 7-30; Reply Br. 2-7) present additional issues. We do not reach these additional issues, as the issue concerning whether or not Penza discloses plural feedback paths, each associated with an individual ring coupled element as recited in claims 1, 8, and 15, is dispositive of the appeal. Appeal 2011-009951 Application 11/968,082 5 In view of the requirement that an anticipatory reference discloses all of the claimed limitations arranged in the same way as recited in the claim (discussed supra), we find that Penza fails to disclose all of the recited features of “ring-coupled delay elements, each including: a feedback path having a gain-attenuating transistor with a gate thereof being coupled to said voltage tune line,” as recited in independent claims 1 and 15, and as similarly recited in remaining independent claim 8. Penza’s disclosure that one single feedback path be associated with all of the plurality of ring-coupled delay elements (i.e., inverting stages 12 each having a gate 18) does not provide the specific arrangement of ring-coupled delay elements, each including a feedback path, transistor, and gate set forth in claims 1, 8, and 15. Penza’s single feedback path shown in Figure 3 is not reasonably equivalent to the plural feedback paths shown in Appellant’s Figure 2, disclosed in Appellant’s Specification (Spec. ¶¶ [0020]-[0043]), and recited in Appellant’s claims 1, 8, and 15. Penza’s ring-coupled delay elements each include an inverting stage 12 having an output transfer gate 18 and a transistor, however, only one feedback path is shown (Fig. 3) associated with all of the plurality of ring- coupled delay elements or inverting stages. Penza’s ring-coupled delay elements shown in Figure 3 and described at column 3, line 41 through column 4, line 14 are not arranged or combined in the same way as set forth in independent claims 1, 8, and 15, thus Penza does not anticipate claims 1, 8, and 15. Lindemann Maschinenfabrik GMBH, 730 F.2d at 1459; Net MoneyIN, Inc., 545 F.3d at 1371. Accordingly, we find Appellant’s contentions (1)(a) and (1)(b) supra to be persuasive. Appeal 2011-009951 Application 11/968,082 6 Penza, taken individually or as combined by the Examiner with Yoshizawa, fails to disclose ring-coupled elements, each including a feedback path, gain attenuating transistor, and gate, as set forth in claims 1, 8, and 15. Appellant’s arguments (App. Br. 7-13; Reply Br. 2-6) that Penza (as to claims 1, 8, and 15), and thus the combination relying on Penza and Yoshizawa as to claims 3, 10, 11, and 17, fails to disclose or suggest the specific arrangement of a feedback path, transistor, and gate being associated with each ring-coupled delay element (as recited in independent claims 1, 8, and 15) are therefore persuasive. Because we agree with Appellant’s arguments that Penza, applied by the Examiner as an anticipatory reference, fails to disclose ring-coupled elements, each including a feedback path, gain attenuating transistor, and gate as arranged and recited in claims 1, 8, and 15, we do not sustain the Examiner’s anticipation rejection of independent claims 1, 8, and 15 based on Penza. Appellant’s arguments as to dependent claims 5-7, 14, and 19-21 (App. Br. 13-21) are persuasive for similar reasons as independent claims 1, 8, and 15 from which claims 5-7, 14, and 19-21 respectively depend. And, Appellant’s arguments as to dependent claims 3, 10, 11, and 17 (App. Br. 22-26) are persuasive for similar reasons as independent claims 1, 8, and 15 from which claims 3, 10, 11, and 17 respectively depend, and because Yoshizawa fails to cure the noted deficiencies with regard to Penza. Because the Examiner’s obviousness rejections of claims 3, 5-7, 10, 11, 14, 17, and 19-21 rely upon the erroneous findings made in the anticipation rejection with regard to Penza’s disclosure of the ring-coupled delay elements as arranged and recited in claims 1, 8, and 15 (see Ans. 8, Appeal 2011-009951 Application 11/968,082 7 “although each element [18] may be considered segments of one feedback path in the ring oscillator, each segment may also be considered its own ‘feedback path,’”), we do not sustain the Examiner’s obviousness rejections based on Penza. CONCLUSIONS (1) Penza fails to disclose the specific arrangement for the ring- coupled elements, each including a feedback path, gain attenuating transistor, and gate, as recited in each of independent claims 1, 8, and 15. Yoshizawa fails to cure the noted deficiencies with regard to Penza for claims 1, 8, and 15. (2) The Examiner erred in rejecting claims 1, 2, 4, 8, 9, 12, 13, 15, 16, and 18 under 35 U.S.C. § 102(b) as being anticipated by Penza, and as a result also erred in rejecting (i) claims 5-7, 14, and 19-21 under 35 U.S.C. § 103(a) as being unpatentable over Penza, and (ii) claims 3, 10, 11, and 17 under 35 U.S.C. § 103(a) as being unpatentable over Penza and Yoshizawa. DECISION The Examiner’s rejections of claims 1-21 are reversed. REVERSED llw Copy with citationCopy as parenthetical citation